Time for the third round

The postman may always ring twice, but Lionel Vial, as a seasoned post-writing man, always rings three times. Here is thus his third foray into the Truvada® litigation.

As our faithful readers surely remember, there have already been two rounds in the Truvada® litigation in France (reported here and here). For the less faithful readers, here is a short reminder.

Truvada® (Gilead) is an anti-HIV drug comprised of the combination of tenofovir disoproxyl fumarate (TDF) and emtricitabine (FTC) approved for Pre-exposure Prophylaxy (PreP) of HIV infection, since it has been shown to allow for a reduction of 86% of the risk of being infected by HIV.

Truvada® was covered until 25 July 2017 by European patent EP 0915894. The effects of the patent have been extended by supplementary protection certificates (SPCs) expiring between 21 and 24 February 2020 depending on the countries.

The SPCs are based on European Union marketing authorization EU/1/04/305/001 and on claim 27 of the basic patent, which reads as follows:

A pharmaceutical composition comprising a compound according to any one of claims 1-25 [N.B. tenofovir disoproxil is claimed in claim 25] together with a pharmaceutical carrier and optionally other therapeutic ingredients. (Emphasis added).

The essential question repeatedly asked to the French courts was whether the use of the expression “other therapeutic ingredients” to refer to emtricitabine (FTC) is indeed sufficient to protect the TDF/FTC combination pursuant to Article 3(a) of Regulation (EC) No. 469/2009 of the European Parliament and of the Council (i.e. the SPC regulation).

Round one saw the rejection, on 5 September 2017, of Gilead’s request for a preliminary injunction under urgency proceedings to prohibit the sale of Mylan’s generic, because the SPC was considered “in all likelihood invalid” by the French judge in charge of the case.

Round two saw the Paris Tribunal de Grande Instance confirm this preliminary ruling by invalidating the SPC on 25 May 2018.

Which brings us to round three, which took place before the Paris Cour d’Appel.

Bam! Wham! … and Pow!

In our previous post on the subject, we had expressed the thought that there was not much suspense left, especially in view of the opinion of the Advocate General (AG) of the CJEU delivered on April 25, 2018 in the then pending case C-121/17, relating to the corresponding UK SPC, and according to which it would not have been obvious to a person skilled in the art that the active ingredient emtricitabine was specifically and precisely identifiable in the wording of the claims of that patent.

Referral C-121/17 yielded a decision on 25 July 2018:

Article 3(a) of Regulation No 469/2009 of the European Parliament and of the Council of 6 May 2009, concerning the supplementary protection certificate for medicinal products, must be interpreted as meaning that a product composed of several active ingredients with a combined effect is ‘protected by a basic patent in force’ within the meaning of that provision where, even if the combination of active ingredients of which that product is composed is not expressly mentioned in the claims of the basic patent, those claims relate necessarily and specifically to that combination. For that purpose, from the point of view of a person skilled in the art and on the basis of the prior art at the filing date or priority date of the basic patent:

            • the combination of those active ingredients must necessarily, in the light of the description and drawings of that patent, fall under the invention covered by that patent, and
            • each of those active ingredients must be specifically identifiable, in the light of all the information disclosed by that patent.” (emphasis added)

Let’s see what the Cour d’Appel made of it in its decision handed down on 19 June 2020:

The court, which studied the consultations and scientific articles submitted by the parties, retains that if it is not contested that the person skilled in the art knew that for treating HIV a therapy combining several active principles was more effective than a mono-therapy, nothing establishes that in 1996 the person skilled in the art, given the the general state of its knowledge, necessarily and specifically thought of emtricitabine to combine it to TD upon reading claim 27 which is drafted in very general terms.

The [first instance] judgement will be therefore confirmed in that it retained that no functional formula necessarily and specifically related to emtricitabine and that consequently the combination of the two products TD and emtricitabine could not be made the subject of an SPC on the basis of the EP 894 patent […]” (emphasis added)

Thus, not much suspense indeed, as round three also ends in a knock-down. Time to throw in the towel?


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 2, June 19, 2020, Gilead Sciences Inc. et al. v. SASU Mylan, RG No. 18/15906.

Karmic retribution

Or should that be cosmic irony?

Today’s tale is that of an inventor applicant who is successful in obtaining the grant of a European patent – which is no small feat for a self-represented individual; and who then loses the French part of his European patent due to a minor misstep.

But he does not give up and is fully reinstated by the Paris Cour d’appel… due to what might also be a procedural error by the French patent office (INPI). Tit for tat.

And now, the somewhat more complete account of these events.

Mr. F (as he is referred to in the redacted version of the ruling) filed a PCT application in 2007, claiming the priority of a French patent application. The invention is a gas turbine engine. Based on this PCT application, a European patent was granted in 2011. If you have a look at the European patent register, you will see that the examination proceedings were mostly conducted by phone, the applicant being instructed which taxes he should pay and being advised as to which modifications would be acceptable for the examining division. Kudos to the EPO for explaining what needed to be explained – and for documenting these explanations in the record accessible to the public (more on this topic below).

Then, Mr. F started paying renewal fees at the INPI to keep the French part of his patent in force.

In 2015, the 9th renewal fee became due. That year, there was an increase in the schedule of fees, and the new rate was 180 euros. But Mr. F paid only 170 euros.

At the EPO, this would (presumably!) not have been a major difficulty, as “the EPO may, where this is considered justified, overlook any small amounts lacking without prejudice to the rights of the person making the payment (Art. 8 RFees)” (Guidelines, A-X, 7.1.1).

But the INPI was not lenient. “Un sou est un sou” – every penny counts. Thus, the French part of the patent was declared lapsed on May 31, 2016.

There are two ways to challenge a declaration of lapse. One is a request for restoration of rights. The other one is a “recours gracieux which I would probably not translate into a gracious appeal, but rather a petition for reconsideration.

The INPI dismissed this petition for reconsideration in a decision dated February 6, 2018. It is against this decision that Mr. F filed an appeal with the Paris Cour d’appel.

And then what?

For starters, the INPI argued that the appeal was inadmissible because the notice of appeal neither specified the date and object of the decision under appeal, nor the professional occupation and birthplace of the appellant. As you can guess, Mr. F did not hire an attorney at the appeal stage either. Usually, this is not a good idea, but in this case the court was satisfied that the decision under appeal could be properly identified by the mention “I hereby appeal the INPI decision for the lapse of my patent“, and the appellant was allowed to simply provide the missing information at the hearing.

On the merits, the INPI argued that the procedure had been clean. Admittedly, no reminder of the grace period was issued after the due date for the renewal fee – but the INPI is not required to send such a reminder.

As for Mr. F, he claimed that he was never informed that his payment was insufficient; that he moved in 2012; and that, although he duly received all correspondence from the INPI, as an exception he did not receive the communication on the declaration of lapse and he only became aware of it more than one year and a half afterwards.

By the way, this is reminiscent of the infamous pravastatin case, in which an SPC was considered lapsed and then had to be reinstated due to a correspondence problem.

Here is now the court’s position:

The court notes that, based on the patent datasheet submitted by the INPI, Mr. F residing in Palluau is mentioned as the patent proprietor, but Mr. F residing in Le Pallet is indicated as the representative. It is at this “representative” address that the INPI sent him each year from 2012 to 2018 the renewal fee receipts, including that of November 12, 2015 for the amount of 170 euros.  

However, it has been established that the decision of declaration of lapse of May 31, 2016 was not sent to Mr. F at his address in Le Pallet, but at the one in Palluau; and that the registered letter came back with the mention “unknown recipient at this address”; and that these circumstances have prevented him to exert his rights to maintain or restore the patent in time.

It can be deduced from all of this that Mr. F’s appeal must be granted so that the decision to reject his petition for reconsideration is set aside. 

A rescue operation by the Cour d’appel.

Let me now express some conflicting observations.

First, the court’s reasoning may rest on shaky legal grounds.

Even if the declaration of lapse had been properly notified to Mr. F, it would still have been too late for him to pay the missing amount. Actually, declarations of lapse are only issued after the grace period is over, i.e. when it is already too late to redress the situation. A proper notification of this declaration of lapse would have enabled him to file a request for restoration – but it would not per se have entitled him to a reconsideration of his case.

Second, despite this somewhat shaky reasoning, I have a lot of sympathy for Mr. F – and thus for this judgment.

What happened to this inventor strikes me as mostly unfair. The INPI did not take any step to let him know that a minor amount of the recently increased renewal fee was still due, then messed up with the patentee’s contact information (how and why being unclear based on the judgment), and finally, as far as I understand, continued to bank the following renewal fees for several years despite the lapse.

Third, I assume that one of the reasons why the INPI stood its ground when Mr. F finally complained is the protection of the interests of third parties.

This is a very legitimate concern. It is true that reinstating a patent further to a procedure initiated a couple of years after the lapse (and thus initiated after the one-year restoration time bar) can also be very unfair – to third parties.

But I think one way to address this concern would be to make the office’s records more fully and readily available to the public, so that third parties can make their own assessment of the actual situation of any patent or application.

Progress has recently been made, but this is still not enough. If you look up the patent in suit on the INPI’s website, you will see that the only documents available for download are… the publication of the PCT application, and the B1 patent!

The declaration of lapse cannot be downloaded – let alone the no-delivery mailing receipt. The full renewal fee records cannot be checked – so that third parties cannot see that the patentee paid the major part of the 9th renewal fees and continued to pay the following ones. Last but not least, the “datasheet” mentioned by the court, in which the “representative address” is supposed to be indicated, can also not be retrieved from the website.

Some documents can probably be more or less easily obtained upon request – at least the communication on the declaration of lapse and hopefully the patentee’s petition for reconsideration and the INPI’s decision to refuse this petition. But I am pretty sure that not all of the relevant information can be obtained. Besides, this is 2020 – everything should be made available online.

Anyway, congratulations to Mr. F, and let’s hope he gets the next steps right when his patent is reinstated, especially regarding the payment of the various renewal fees.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 2, June 19, 2020, Mr. F v. Directeur général de l’INPI, RG No. 19/06949.

One shot one opportunity

The song goes like: “If you had one shot or one opportunity to seize everything you ever wanted in one moment, would you capture it or just let it slip?

I know, a quote from a rap song is not what you would expect in an IP blog post discussing infringement seizures. But bear with me and you will see that it is indeed quite fitting.

The case pitches France Routage Participations against Maury Imprimeur. The patent at stake is EP 1620211, granted in 2007 to France Routage and unopposed.

Maury Imprimeur, as its name indicates, is active in printing, but also in sorting and mailing. France Routage’s patent covers an installation and a method “for processing printed papers in order to dispatch the printed papers to addressees“.

In 2014, Maury Imprimeur received a cease and desist letter from France Routage and replied that it did not infringe the EP’211 patent. Two years went by, and in May 2016 France Routage had an infringement seizure carried out in the premises of Maury Imprimeur, in the fine town of Manchecourt. One month later, France Routage file a complaint with the Paris TGI, alleging infringement of the French part of their European patent.

During the proceedings, France Routage filed a motion to request a technical expertise.

This motion was rejected by the case management judge on April 5, 2018. The case proceeded to trial, and the judgment was issued by the TGI on November 8, 2018. According to this judgment, the patent was valid but the infringement claim was rejected.

France Routage appealed both the order of the case management judge of April 2018 and the judgment on the merits. The Paris Cour d’appel handled both aspects in its decision dated May 15, 2020.

The court started with dealing with the validity of the patent – which of course was challenged by the defendant. Insufficiency of disclosure, lack of novelty and lack of inventive step were the three grounds relied upon by Maury. All three were rejected by the court.

Then comes what I think is the most interesting part of the judgment, namely the plaintiff’s motion for expertise.

As a reminder, an infringement seizure had taken place in 2016. In June 2017, the defendant had called upon a bailiff on its own, to establish an exonerating report. It is as a reaction to this report filed by the defendant that the claimant had filed its motion for technical expertise.

France Routage explained that the infringement seizure had not enabled it to determine all components of Maury’s sorting installation. Therefore, it was not possible to fully appreciate the contents of Maury’s bailiff report.

However, the court was not sympathetic to France Routage’s argumentation:

The case management judge […] rightly recalled that France Routage, as the infringement claimant, has the burden of proof and was authorized to carry out an infringement seizure to this end on the sorting lines at stake. [The judge] rightly added that the acting bailiff was accompanied by two patent attorneys and an IT expert and […] described only the sorting line in operation (line No.3) and that the other sorting lines were not hidden. 

As rightly mentioned by the first instance judge, it is only after Maury filed the bailiff report of June 22, 2017 that France Routage, more than one year after the infringement seizure of May 9, 2016, requested an expertise after having deemed having sufficient evidence. 

It has not been demonstrated that the infringement seizure, which authorized […] “describing in a detailed manner the allegedly infringing processes and installations” as well as accessing the installations dedicated to “operations of sorting printouts and all related IT systems” and requesting that the operation mode of the installations should be explained, did not make it possible to more completely or precisely describe sorting line No.3 which was in operation as well as all associated computers and robots which were present, nor to describe and get explanations on the operation of the other visible sorting lines. 

Infringement seizure is a powerful weapon in the hands of IP right owners in France, in order to establish the existence of infringement. On the other hand, when an infringement seizure does not live up to its expectations of providing evidence of the infringement, then IP right owners are in serious trouble. Actually, in view of this judgment, they may not get a second chance.

In Eminem’s words, as the patentee, “you only get one shot, […] this opportunity comes once in a lifetime“.

What if there was only one shot in each game?

With the caveat that I am of course not aware of all the facts (they are never exhaustively reflected in the written decisions, perhaps the absence of infringement was already very clear based on the record), this position seems rather harsh.

An infringement seizure is no walk in the park. In (normally) just one day, the seizing team has to figure out which information to get and how to get it, in enemy territory, while complying with onerous formalism. Sometimes it works well, sometimes it doesn’t, depending on the circumstances. In a worst case scenario, the seizing team may come home completely empty-handed. And it is certainly possible for them to forget about asking some relevant questions, acting under pressure and severe time constraints, and not knowing how the defense will develop in the next couple of years.

But the court further held:

The parties do not agree (and did not agree before the infringement seizure) on whether the characterizing part of the main claims of EP’211 is reproduced. This circumstance does not justify a taking of evidence having the same purpose as the infringement seizure, namely describing the operation of the sorting installations of Maury, in particular its IT means.  

Same purpose or not, an expertise is very different from an infringement seizure: it is an inter partes procedure, with much more time available, and wherein each party spontaneously and forcibly presents evidence to an impartial expert.

These two procedures can be thought of as complementary, and not mutually exclusive.

Wouldn’t it perhaps have been fairer to grant the motion for expertise on the condition that the plaintiff should provisionally bear all related costs (including reasonable fees of the defendants’ attorneys)?

Anyway, having denied the plaintiff’s motion, the court then also found against them regarding the infringement claim. Not very surprising: after explaining that an expertise was required to prove its case, the patentee probably had a hard time convincing the court that there was sufficient evidence of an infringement.

The only consolation for France Routage was that their infringement claim had been found abusive by the TGI. The Cour d’appel set aside that part of the judgment, applying a higher abuse of procedure threshold.

In particular, France Routage had the right to request an expertise and still claim that there was infringement, said the court.

The end – at least for now: “Snap back to reality, oh there goes gravity“.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 2, May 15, 2020, SARL France Routage Participations v. SAS Maury Imprimeur, RG No. 19/00916.

Adding pepper to a tomato and broccoli salad

At this time, all readers are probably already aware of the issuance of opinion G 3/19 of the Enlarged Board of Appeal on May 14, 2020.

I know, twelve days is a long time in the internet era.

But trust me, Lionel Vial’s below report on this topic is worth reading.  Lionel loves making predictions, and his forecast on plants and animals obtained by essentially biological processes is that this hot topic is not about to cool down and that we are in for ongoing legal controversy – and possibly one or more future referrals.  

Is the illustrated cactus a plant obtained by an essentially biological process?

Here is Lionel’s report.

As this blog has consistently strained to keep pace with the seemingly never ending developments regarding the patentability of plant and animals obtained by essentially biological processes, as reported here, here and here, we felt compelled to comment on opinion G 3/19 of the Enlarged Board of Appeal (EBA) of the EPO, which was rendered on May 14, 2020.

To make a long story short, G 3/19 (Pepper) follows from a referral pursuant to Article 112(1)(b) EPC of the President of the EPO, itself following from decision T 1063/18 of Board of Appeal 3.3.04 of December 5, 2018, which decided that in accordance with Article 164(2) EPC, the interpretation of Article 53(b) EPC by the EBA in decisions G 2/12 (Tomatoes II) and G 2/13 (Broccoli II) prevailed over Rule 28(2) EPC.

In other words the Board of Appeal decided plants and animals obtained by essentially biological processes were not to be considered exceptions to patentability pursuant to Article 53(b) EPC in spite of Rule 28(2) EPC, which was introduced by a Decision of the Administrative Council of June 29, 2017 and entered into force on July 1, 2017. Rule 28(2) EPC provides that under Article 53(b) EPC, European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.

There are two parts in opinion G 3/19, a part which relates to institutional provisions and a part which relates to substantive provisions.

Turning first to the substantive part of the opinion, which directly impacts daily practice at the EPO, the EBA, adopting a “dynamic interpretation” of Article 53(b) EPC for the circumstance, has abandoned the interpretation of Article 53(b) EPC given in decision G 2/12 and G 2/13, in the light of Rule 28(2) EPC.

As a consequence, this new understanding of Article 53(b) EPC has a negative effect on the allowability of product claims or product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process.

It is to be noted that the EBA goes beyond the wording of Rule 28(2) EPC and also excludes plant material exclusively obtained by means of an essentially biological process. This may call for future clarification (see below).

Besides, in order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board ruled that the new interpretation of Article 53(b) EPC given in G 3/19 has no retroactive effect on European patents containing such claims which were granted before July 1, 2017, when Rule 28(2) EPC entered into force, or on pending European patent applications seeking protection for such claims which were filed or have a priority date before that date.

This contradicts the Decision of the Administrative Council which provided in its Article 3 that Rule 28(2) EPC applied to European patent applications filed on or after July 1, 2017, as well as to European patent applications and European patents pending at that time.

At this stage of the post, we should self-congratulate for having foreseen in our previous post on the subject of July 3, 2017 that the consequence of the Decision of the Administrative Council would be that plants and animals exclusively obtained by means of an essentially biological process are exceptions to patentability, but that the new Rule 28(2) EPC could not apply to patents and applications filed before July 1, 2017. However, to be frank, at that time we had not anticipated that a Board of Appeal would refuse to apply Rule 28(2) EPC pursuant to Article 164(2) EPC because it was in contradiction with the interpretation of Article 53(b) given by the EBA.

This brings us to the institutional part of the opinion of the EBA.

The EBA does not consider that there would be a general prohibition on adopting secondary legislation [by the Administrative Council] which concerns the interpretation of a provision of primary legislation given by itself (see point XXV.3.1).

Besides, the EBA considers that the exception to patentability brought by Rule 28(2) EPC is not incompatible with the wording of Article 53(b), which does not rule out this broader construction of the term “essentially biological processes for the production of plants or animals” and that Rule 28(2) EPC could be considered to reflect the Contracting States’ intention to give a special meaning to that term (see point XXVI.6).

As such, the new Rule 28(2) EPC has to be taken into account in the dynamic interpretation of Article 53(b) as seen above.

It follows that the content of Rule 28(2) EPC does not stand in contradiction with the new interpretation of Article 53(b) EPC given by the EBA and that there is no conflict between these provisions. Hence, Article 164(2) EPC is not relevant (see point XXVII of the opinion).

As far as we are concerned, we are not sure if it was ever the initial intent of those who drafted the EPC to have the substantive patent law provisions of the EPC, especially Chapter I Patentability, interpreted by the Implementing Regulation, but let’s not be more Catholic than the pope.

So, is this the end of tomatoes, broccoli or pepper decisions? Let us take another bet here: No, in our opinion, other questions will need to be answered by the Boards of appeal of the EPO and perhaps by the EBA.

Here is a short list, probably not exhaustive, of likely questions:

        • Can parts of plants, such as fruits, be considered to be exclusively obtained by means of an essentially biological process?
        • Are plants or animals which are obtained by means of an essentially biological process but which can also be obtained by a non-essentially biological process exceptions to patentability?
        • Are plants or animals which are obtained by a process comprising an essentially biological process and a further step of a technical nature which does not serve to enable or assist the performance of the steps of sexually crossing the whole genomes of plants or of subsequently selecting plants exceptions to patentability?

Eventually, this leads us to our concluding riddle: After tomatoes, broccoli and pepper, what will be the name of the plant attached to the next decision, or opinion, of the EBA?


CASE REFERENCE: Enlarged Board of Appeal of the European Patent Office, G 3/19, May 14, 2020, Pepper (follow-up to “Tomatoes II” and “Broccoli II”).

Insufficiently disclosed or reasoned?

After almost 2 months spent buried at home, is there a more appropriate patent to discuss today than one relating to underground civil engineering equipment?

The patent in suit is FR 2941716, granted on April 22, 2011 to the French company SEMAP, and later limited in front of the INPI in July 2016.

SEMAP has been marketing underground chambers for the connection of e.g. telecom cables since 2013, via its distributor Frans Bonhomme.

The adverse party in the case is the British company Northstone (NI) Ltd., active in the same business, via its distributor PUM Plastique.

Since 2007, Northstone had been supplying the French telecom provider Orange with connection chambers. But in 2014, Orange revised the procurement of these goods and granted the entirety of the market to Frans Bonhomme – SEMAP’s distributor. Northstone learned on this occasion that Orange had concerns about a possible infringement of SEMAP’s FR’716 patent.

This led Northstone to initiate legal proceedings in March 2016, with a claim for nullity of the FR’716 patent, an auxiliary claim for a declaration of non-infringement, and an additional claim for damages due to disparagement.

An underground chamber suitable for the next confinement stage?

The plaintiff raised two grounds for nullity: insufficiency of disclosure and lack of inventive step.

Claim 1 of the patent as limited reads as follows:

Connection chamber device consisting in a rectangular cuboid part buried underground, closed on the upper side by one or more lids, and containing means for connecting wires or cables belonging to a distribution network, characterized in that it is constituted by the superposition, by interlocking means, of at least two elements, each obtained by molding a composite material, and each comprising a peripheral wall comprising two skins delimiting a space, as well as openings for the injection of concrete into said space, in that the upper element has means for adaptation of a frame for receiving one or more lids on its upper side, and in that the lower element comprises a bottom provided with water evacuation means, the bottom of the lower element being fixed thereto by interlocking means, which have the same profile as the interlocking means of the two lower and upper elements. 

The important part here is the presence of the openings for the injection of concrete. The nullity claimant argued that the disclosure of the patent was insufficient with respect to this particular feature.

The court, which we still need to get used to calling the TJ (tribunal judiciaire) instead of the TGI (tribunal de grande instance), made an important initial remark on the burden and standard of proof:

The party raising insufficiency of disclosure has the burden of proof. But the patentee needs to prove common general knowledge relied upon, which includes reference textbooks and general technical literature, but in principle not patent literature nor scientific articles. 

It is noteworthy that what is available as documentary evidence of common general knowledge seems to be the same for French courts as for the EPO.

In this case, the court did find that the disclosure was insufficient. Here is what it had to say on this matter:

The patent does not precisely disclose where and how the openings must be made, in order to pour concrete, nor the quality and consistence of the concrete that should be used. It does not discuss either the compatibility of the presence of “braced elements through the internal walls of the double skins” (p.2 l.5) or the presence of “transverse openings for passing wire or cables” with the injection of this concrete. 

At this stage I have mixed feelings about this assessment.

From an EPO perspective, an insufficiency objection presupposes serious doubts substantiated by verifiable facts. Here, the court only notes that some aspects are not discussed in the patent. But whether this does indeed raise difficulties for the skilled person is hard to determine based on such brief explanations.

It is possible that the claimant’s submissions contained more detailed and more convincing arguments, but if so they unfortunately did not find their way into the judgment.

What I do not have mixed feelings about, and what I actually take issue with, is the next part of the reasoning:

Even if, as suggested by SEMAP, the skilled person could do despite these shortcomings using common general knowledge, it remains that there is a blatant contradiction between claim 1 on the one hand, which in its characterizing portion mentions the existence of openings for pouring concrete, which thus appear to be an essential element of the invention, and the description of the patent on the other hand, which mentions towards the very end the advantageous possibility (and therefore not mandatory for implementing the invention) of injecting this material. In view of this contradiction, which does not make it possible for the skilled person to determine whether the presence of openings is necessarily required, or if it is only optional, the patent is insufficiently disclosed and must thus be revoked. 

This, with all due respect, seems to be over the top.

Of course the presence of the openings is required, since it is explicitly recited in claim 1. The mere fact that the word “advantageously” is used in the description to introduce these openings does not make any difference.

Assuming that there is indeed a contradiction between the claims and the description, it appears to be a merely formal one, not a substantial one leading to actual implementation difficulties.

And it could even be argued that there is no contradiction at all, since “advantageously(“de manière avantageuse“) could plausibly be understood as meaning that this is an advantage of the invention (not an optional feature of the invention).

Truth be told, it is not the first time that a French court has picked up on some unfortunate but truly minor drafting inaccuracy and has blown it out of proportion.

The patent being revoked on the ground of insufficiency, inventive step was not addressed.

As for the disparagement claim, it was rejected. There was evidence that Orange had been warned about a potential infringement of SEMAP’s patent. But, unfortunately for the plaintiff, based on the available paper trail, it was not proven that SEMAP was directly responsible for this patent infringement rumor.

There is thus cause for unhappiness for both parties, and it is hard to tell which one is more disgruntled – especially since the court, in a not-so-common move, did not award any cost order under article 700 CPC against either party.


Tribunal judiciaire de Paris, 3ème chambre 3ème section, January 10, 2020, Northstone (NI) Ltd. v. SEMPA SAS & SEMAP Composite SAS, RG No. 16/04839.